Deal or no-deal? Implications for Trademarks and Design rights following a no-deal Brexit

By Ruth Hoy, Leigh Martin, John Wilks and Sam Mitchell 26 September 2018

TRADEMARKS AND DESIGNS

BACKGROUND

This week, the UK Government released multiple technical notes detailing the intellectual property implications of a no-deal Brexit for exhaustion of rights, patents, trademarks and designs, and copyright. A few months ago, the idea of a no-deal Brexit was only entertained as a highly unlikely, ‘worst-case scenario’. This series of notes provides an update on the government’s plan in light of a hard Brexit.

EU Trademarks and Community Designs

The UK government has confirmed that in the event of a hard Brexit:

existing registered EU trademarks or registered Community designs held will continue to be valid in the remaining EU member states;

protection of existing registered EU trademarks or registered Community designs in the UK will be through a new, equivalent UK right which will be granted with “minimal administrative burden” (there is no specific guidance as to what this means, and no confirmation that it will not require payment of a fee). The new UK mark created will then be treated as if it had been applied for and registered under UK law;

rights holders will be notified that a new UK right has been granted. There will be an ‘opt out’ for any business, organisation or individual that does not want to receive a new comparable UK registered trade mark or design;

applicants with a pending application for an EU trademark or a registered Community design that has not achieved registration by the date that the UK leaves the EU will be able to refile in the UK for the new UK equivalent right retaining the EU application date for priority purposes, PROVIDED that the application is made within nine months from the date of exit. The re-filing will incur a standard trade mark filing fee;

applicants with pending applications for an EU trademark or a registered Community design will not be notified so will need to consider themselves whether to take advantage of the opportunity to re-file in the UK in that nine month window;

new applications will be eligible to be filed in the UK for UK trademarks and registered designs as they are now, and at the cost specified in the UK fee structure; and

UK applicants, like EU and third country applicants, will continue to be able to apply for protection in the EU through an EU trade mark or registered Community design as they do currently.

Unregistered Community Designs – the Supplementary Unregistered design right

For Community unregistered designs which exist at exit date: The UK government will create an equivalent of the EU Community Design right, so that existing unregistered Community design rights will continue to apply in the UK for the remaining period of protection of the right. This will be provided with no action required by the right holder. The UK government also comments that existing unregistered Community designs will also continue to be valid in the remaining EU member states.

For new designs disclosed after exit date: Such designs first disclosed in the UK will be able to benefit from the existing UK unregistered design regime. Designs disclosed in the UK will also be able to benefit from a new “supplementary unregistered design right” to be introduced by the government, which will mirror the characteristics of the unregistered Community design right.